United States District Court, D. Delaware. LUCENT TECHNOLOGIES, INC. Plaintiff. v. NEWBRIDGE NETWORKS CORP. and Newbridge Networks, Inc. Defendants.

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1 United States District Court, D. Delaware. LUCENT TECHNOLOGIES, INC. Plaintiff. v. NEWBRIDGE NETWORKS CORP. and Newbridge Networks, Inc. Defendants. No JJF Sept. 21, Action was brought alleging infringement of five patents relating generally to data networking. Following jury verdict in favor of patentee on all issues, except infringement of certain claims of one patent, parties cross-moved for judgment as a matter of law, and defendant also moved for new trial. The District Court, Farnan, J., held that: (1) patentee failed to offer substantial evidence sufficient to support the jury's verdict regarding patent teaching a method of handling random and bursty errors in a data transmission system under either literal infringement or the doctrine of equivalents; (2) substantial evidence supported jury verdict that defendant literally infringed certain claims of patent teaching a method of handling random and bursty errors in a data transmission system; (3) patentee presented sufficient evidence to establish that defendant literally infringed claims of patent relating to speech compression as verdict pertained to infringement of certain products but not as to other products; (4) claims of patent teaching a method of handling random and bursty errors in a data transmission system were not invalid as anticipated by either of two prior art references; (5) sufficient evidence supported jury's award of royalty damages which included software in the royalty base; (6) patent teaching a method of handling random and bursty errors in a data transmission system was not invalid by reason of indefiniteness; and (7) defendant was not entitled to new trial. Plaintiff's motion for judgement as a matter of law denied; defendant's renewed motion for judgment as a matter of law at the close of the evidence granted in part and denied in part; defendant's motion for a new trial on certain issues denied. 4,979,174. Valid And Infringed. Josy W. Ingersoll, John W. Shaw, Young Conaway Stargatt & Taylor LLP, Wilmington, DE, Kirkland & Ellis, New York, NY (John M. Desmarais, Gregory S. Arovas, Robert A. Appleby, Henry G. Sawtelle, James T. Bailey, of counsel), for Plaintiff Lucent Technologies, Inc. Arthur G. Connolly, Jr., Connolly Bove Lodge & Hutz, Wilmington DE, Morgan Lewis & Bockius LLP, Philadelphia, PA Thomas B. Kenworthy, William P. Quinn, Jr., Clifford J. Peterson, of counsel), Stephen G. Rudisill, Janet M. Garetto, Russell J. Genet, Jenkens & Gilchrist PC, Chicago, IL, for Defendants Newbridge Networks Corporation and Newbridge Networks, Inc.

2 OPINION FARNAN, District Judge. Pending before the Court in this patent infringement action is a Motion For Judgment As A Matter Of Law FN1 (D.I.616) filed by Plaintiff, Lucent Technologies, Inc. ("Lucent") and a Renewed Motion For Judgment As A Matter Of Law At The Close Of The Evidence (D.I.618) and a Motion For A New Trial On Certain Issues (D.I.617) filed by Defendants, Newbridge Networks Corporation and Newbridge Networks, Inc. (collectively "Newbridge").FN2 By its Motion For Judgment As A Matter Of Law, Lucent requests the Court to enter a judgment of infringement against Newbridge on Claims 1 and 4 of U.S. Patent No. 4,750,136. FN1. In addition to its Motion For Judgment As A Matter Of Law, Lucent has also filed several other posttrial motions, including a motion for permanent injunction, adjustment of damages, enhancement of damages, attorneys' fees and prejudgment interest on the judgment entered in this case. Although all of Lucent's Motions are advanced in a single motion paper (D.I.616), the parties have separately briefed these issues. Accordingly, the Court will address the remaining motions pending in this case by a separate Memorandum Opinion and Order. FN2. Newbridge filed two separate motion papers, one for its Renewed Motion For Judgment As A Matter Of Law and one for its Motion For A New Trial. However, Newbridge briefed these Motions together, advancing its Motion For A New Trial, as an alternative motion. (D.I.628). By its Renewed Motion For Judgment As A Matter Of Law, Newbridge requests the Court to enter a judgment of non-infringement as a matter of law with regard to all five of the patents-in-suit. Specifically, Newbridge contends that Lucent failed to establish infringement by a preponderance of the evidence, or in the alternative, that several defenses preclude a finding of infringement against Newbridge. Alternatively, Newbridge seeks a new trial on the questions of infringement and damages, as well as on certain of its defenses, including the validity of the patents and the existence of an implied license to practice the patents. (D.I.617). For the reasons set forth below, the Court will deny Lucent's Motion For Judgment As A Matter Of Law, grant in part and deny in part Newbridge's Renewed Motion For Judgment As A Matter Of Law, and deny Newbridge's Motion For A New Trial On Certain Issues. I. Procedural Background BACKGROUND Plaintiff Lucent Technologies, Inc. ("Lucent") filed the instant action against Defendants Newbridge Networks Corporation and Newbridge Networks, Inc. (collectively "Newbridge") on June 24, 1997 (D.I.1), initially alleging infringement of four patents: (1) U.S. Patent No. 4,769,810 (the "Eckberg '810 patent"); (2) U.S. Patent No. 4,769,811 (the "Eckberg '811 patent"); (3) U.S. Patent No. 4,979,174 (the "Cheng '174 Patent"); and (4) U.S. Patent No. 4,437,087 (the "Petr '087 Patent"). On January 13, 1998, Lucent amended

3 its Complaint to add a claim of infringement under a fifth patent, U.S. Patent No. 4,750,136 (the "Arpin '136 Patent"). (D.I.25, 30). A three week jury trial was held on all issues presented by the parties, except certain equitable defenses. The jury returned a verdict in favor of Lucent on all issues, except infringement of Claims 1 and 4 of the Arpin patent. Following the trial, the parties filed a stipulation resolving the outstanding equitable issues. (D.I.683). Accordingly, the only issues remaining for the Court's consideration are those raised by the parties' post-trial motions. II. Technological Background The patents at issue in this action relate generally to data networking. (D.I.551). A. Eckberg '810 Patent and Eckberg '811 Patent The Eckberg '810 and '811 patents disclose methods and apparatus for controlling congestion in a packetswitching network. In an end station of a packet-switched network, a data message is broken into shorter pieces called packets, which are then individually transmitted by the end station into the network. Each packet includes a header. The header contains information identifying the destination of the packet, or in some implementations, the connection to which the patent belongs. The nodes of the packet-switched network use the information in the header to route the packet through the network to the intended destination end station. At the destination end station, the packets are reassembled into the original message. (D.I. 551 at ) When several users attempt to utilize a network at the same time, congestion can occur. Congestion occurs when a network component, or a portion of a network component, is required to process more packets than it can handle. In addition to long delays in data transmission, congestion can also result in packet loss. As described in the Eckberg patents: A principal area of packet congestion is in buffers, or queues, in each node, particularly where the buffers become unavailable to store incoming packets. Yet the buffer requirement is closely related to the utilization of processor real time and/or link bandwidth. When the processor real time is exhausting, or when the link bandwidth is not sufficient to handle the packet traffic, queues within the switching node will build up causing a long delay. Finally packet buffers will be exhausted, resulting in the dropping of packets. ('810 patent, col. 2, ; '811 patent, col. 2, ). Congestion and the resulting loss of packets, can be prevented and controlled by allocating bandwidth to users' connections and permitting new connections only when bandwidth is available. Bandwith is the amount of data that can be sent per unit of time. To allocate bandwith appropriately in this manner, the network must provide a means for users to select their bandwith needs. Once the network understands the user's needs, the network creates the appropriate parameters for the user and enforces those parameters for the user. The agreement between the user and the network concerning the user's bandwith needs is called a traffic contract. Once a traffic contract is established between the user and the network, packets that are transmitted at a rate in excess of the agreed parameters are automatically discarded at the network's entry point. Because traffic on the network varies at times, the automatic discarding of packets that exceed a user's allocation is not efficient. Specifically, there may be times that the network could have handled the excess traffic instead of dropping those excess packets. The Eckberg '810 and '811 patents teach a traffic

4 enforcement mechanism that allows excess packets to be marked, instead of automatically discarded. By marking excess patents, the network can decide whether to discard marked excess packets during periods of congestion, or to allow those marked packets to proceed during periods of relative quiet. Generally speaking, the claims of the '810 patent are directed toward marking excess packets, and the claims of the '811 patent are directed toward dropping the marked packets during periods of network congestion. (D.I. 551 at ) B. Cheng '174 Patent The Cheng '174 Patent teaches a method of handling random and bursty errors in a data transmission system. A random error is typically caused by noise and generally results in a single bit error. A bursty error is usually more serious and results in multiple bit errors. When a random or bursty error occurs in the header of a packet, that packet may be delivered to an incorrect destination address. (Cheng, col.1, ). Although the prior art in this field taught various techniques for dealing with these types of error, the prior art was not adequate in packet-switching systems involving high transmission speeds. High transmission speeds often limited the effectiveness of the prior art's error correction codes, because only a few bytes of error correction coding could be used if the speed was to be maintained.. (Cheng, col.1, ). By using only small amounts of error correction coding, bursty errors could not be quickly and accurately detected. To resolve the problems associated with the prior art, the Cheng Patent teaches a method to detect both random and bursty errors using only a small amount of error correction coding. The patent teaches a switch between two states: (1) an error correction circuit state (ECC); and (2) an error detection circuit state (EDC). The ECC state is used during normal conditions. The EDC state is used when an error is detected on the assumption that bursty conditions have arisen. If the assumption proves true and bursty conditions have arisen, the many errored packets that result from bursty conditions will be detected and discarded, thereby preventing their delivery to the wrong user. However, if the assumption is incorrect and bursty conditions have not arisen, it is unlikely that the next packet processed will have any errors. Accordingly, the system will switch back to the normal ECC state to perform random error corrections, rather than bursty error corrections. (D.I. 551 at 36). C. The Petr '087 Patent The Petr '087 Patent relates to speech compression. Speech signals are typically transmitted in digital telephone systems via pulse code modulation (PCM). PCM is a standardized technology whereby analog signals are sampled at 8000 times per second and converted into pulses. These pulses are each represented by an 8-bit code. The result is a transmission rate equal to 64 kbits/sec. (D.I. 551 at 47.) Adaptive Differential Pulse Code Modulation (ADPCM) is a method for compressing PCM signals, thereby reducing bandwith and increasing efficiency. The Petr patent teaches an improved form of ADPCM. (D.I. 551 at 47.) A typical ADPCM coder and decoder consists of a quantizer and a predictor, either or both of which are capable of changing in response to input signals. The predictor provides an estimate of the current signal based on previous signals. The estimate is then subtracted from the input signal to form a difference signal, which is smaller in magnitude than the original input signal. The difference signal is then quantized by the quantizer.

5 In the prior art, ADPCM systems worked well with "low speed" speech signals, but were not effective at handling "high speed" signals like those produced by a fax or modem. Other systems had the opposite capabilities, working well with high speed signals, but not with low speed signals. The Petr Patent teaches a "dynamic locking quantizer" that is capable of two different adaptation speeds to handle the different types of signals. In addition, the Petr Patent teaches a means for determining the type of signal that is present and then transitioning between the two adaptation speeds in response to the signal. (D.I. 551 at 48.) D. Arpin '136 Patent The Arpin '136 Patent teaches a method and apparatus for automatically initializing circuit boards of a communication system. Communication systems often require manual configuration by the user of features performed by port circuit boards during initialization of the system. This manual configuration involves manually loading various parameters into the circuit boards and/or booting programs into the board, both of which require considerable time and effort. The Arpin '136 Patent discloses an apparatus and method aimed at reducing the time and effort involved in manual configuration by automating part of the configuration process. As described in the Arpin Patent: [W]hen power is applied or in response to a reset signal, each circuit board systematically reports its identification type (ID) code to the system controller which then accesses options tables in memory using the board ID code to obtain predetermined operating parameters which are sent to and which define one or more features to be performed to the associated circuit board. ('136 Patent, col. 1, ). In addition to automating part of the configuration process, the Arpin Patent also teaches the replacement of a malfunctioning circuit while the system is still operating. The replacement circuit board is automatically initialized by the system using the stored operating parameters associated with the replaced circuit board. ('136 Patent, col. 1, ). III. Claim Construction The Court issued its claim construction rulings during the jury charge in this case. Given the circumstances at that time, the Court did not issue an opinion detailing the rationale for its construction rulings. Accordingly, the Court will herein reproduce its claim construction rulings with the rationale supporting the Court's conclusions. A. Eckberg ' Claim 12 of the '810 patent Claim 12 of the Eckberg '810 Patent is directed to a method for monitoring the transmission rate of a user's packets into the network and marking those packets that are transmitted at an excessive rate. In full, with the disputed terms emphasized FN3, Claim 12 provides: FN3. As the Court instructed the jury, any other terms in this or the other patents-in-suit, that were disputed by the parties were construed according to their plain meanings. In other words, after reviewing the claim language itself and the specifications of the various patents-in-suit, the Court determined that these phrases were self-explanatory and no additional construction was needed. Accordingly, to the extent that the parties

6 may have raised other phrases for construction in their Markman briefing, the Court has concluded that these phrases are appropriately construed using their plain meaning. A method for marking an excessive bandwith packet in a packet-switching network, the method comprising the steps of: a. accumulating a count of bytes of data arriving at a node per interval; b. receiving a packet with a number of bytes of data; c. comparing the accumulated count of bytes of data arriving at the node per interval with a predetermined threshold; d. if the accumulated count is less than the threshold, incrementing the count in the accumulator by a constant plus the number of bytes of data in the received packet; e. if the accumulated count is greater than the threshold, marking the received packet; and f. subsequent to step d or e passing the unmarked or marked packet along in the node. ('810 Patent, col. 12, ). For the reasons that follow, the Court construes the disputed terms as follows: [1] - "accumulating a count of bytes of data arriving at a node per interval" is construed to mean maintaining a count of bytes that have arrived at a node over a period of time. Newbridge contends that this term should be limited to a count that maintains the total number of bytes arriving at a node. After reviewing the claim language and the specification, the Court concludes that there is nothing in the claim language or specification suggesting that a total count must be maintained. Rather, the claim language uses the article "a" before the word "count," suggesting that the count is not limited to a total number, but is kept open. In addition, the specification explains that the count is used to compare the traffic from a particular user's bandwidth against the user's subscribed bandwith to determine whether the user is exceeding his or her subscription. ('810 Patent, col. 5, , col. 6, ). To this effect, the count does not even accumulate all the bytes of data arriving at the node. Indeed, the count does not accumulate the bytes of data arriving in marked packets, because these packets are outside the traffic contract. ('810 Patent, col. 8, ). Thus, the bytes of data accumulated by the count described in step (a) of Claim 12 are akin to a subset of the data arriving at any given node, and not a total count. Accordingly, in the Court's view, its construction is consistent with the plain language of the claim and the Patent's specification. [2] - "incrementing the count in the accumulator by a constant" is construed to encompass a constant whose range is typically between 0 and Newbridge contends that the constant referred to in this phrase must be a non-zero constant. After reviewing the claim language and the specification, the Court concludes that Newbridge's construction is contradicted by the specification which states that the constant can be a value between 0 and ('810 Patent, col. 7, ). Accordingly, in the Court's view, its construction of this phrase is consistent with the express language of the specification. 2. Claim 21 of '810 Patent Claim 21 of the '810 Patent is directed to a packet-switching node that includes an apparatus to monitor the

7 transmission rate of the received packets and to mark those packets being transmitted at an excessive rate. In full, with the disputed terms highlighted, Claim 21 reads: A packet-switching node with a receive terminal; a channel interconnected with the receive terminal for transmitting packets of data at a selectable one of a plurality of transmission rates; means for determining the rate at which a packet of data is being transmitted through the channel and generating a mark whenever the determined rate is an excessive rate; and means for storing the mark with the packet of data. ('810 Packet, col. 16, ). For the reasons that follow, the Court construes the disputed terms as follows: [3] - "receive terminal" is construed to mean an input port of a packet switch. Newbridge contends that this term is indefinite, or to the extent that it was capable of construction, should be defined as a customer terminal that receives data from a packet switch node. After reviewing the specification, the Court concludes that the specification refutes Newbridge's construction, because it indicates that the customer terminal equipment actually resides outside the network and is not co-located with a packet switch node. ('810 Patent, col. 4, , Fig. 1). Further, the monitoring and marking described in this claim is not performed by customer terminal equipment, but rather, is performed at the packet-switching node. That the receive terminal is an input port is supported by the specification which describes that the data packet is "received by an access node." ('810 Patent, col. 3, , col. 5, 1.67-col. 6, 1.1, 3). In addition, the Court's construction is supported by the meaning ascribed to the word "terminal" by those of ordinary skill in the art. Specifically, the word "terminal" is defined as "[a] point in a system or communication network at which data can either enter or leave." The New IEEE Standard Dictionary of Electrical And Electronics Terms 1351 (5th ed.1993). - "means for determining the rate at which a packet of data is being transmitted through the channel and generating a mark whenever the determined rate is an excessive rate" is a means-plus-function element. The function of this element is to determine the rate at which a packet of data is being transmitted and to generate a mark when that rate is an excessive rate. The structure associated with this element is a logic circuit depicted in Figure 2 which executes the algorithms of Figures 3 and 8 along with the update algorithm of Figure 4. Both Lucent and Newbridge apparently agree on the function of this element as stated by the Court. (D.I. 568 at 12; D.I. 547 at 15). However, the parties disagree over the corresponding structure for this element. Specifically, Newbridge contends that this structure was missing from the specification. After reviewing the specification of the '811 Patent, the Court concludes that the specification describes in detail that the structures of the logic circuit and the algorithms of Figures 3, 8 and 4 correspond to the function described in this element. ('810 Patent, col. 6, ; col. 6, col.8, 1. 41, col. 9, col. 10, 1. 41). B. Eckberg ' Claim 10 of the '811 patent Claim 10 of the '811 Patent is directed to a method for dropping a data packet in a node of a packet-

8 switching network. In full, with the disputed terms highlighted, Claim 10 of the '811 Patent reads: A method for dropping a data packet to be transmitted from a switch node in a packet switching network, the method comprising the steps of: a. preparing to transmit the data packet; b. determining whether or not the data packet is marked as being transmitted at an excessive rate; c. evaluating congestion at the switch node; d. determining whether or not the congestion is at or above a predetermined value; and e. if the data packet is marked as being transmitted at an excessive rate and the congestion is at or above the predetermined value, dropping the data packet before it is transmitted from the switch node. ('811 Patent, col. 14, ). For the reasons that follow, the Court construes the disputed terms as follows: [4] -"preparing to transmit the data packet" is construed to mean accessing the header of a packet to make a decision on where to send the packet and to obtain the marking field. Newbridge contends that this phrase should be defined to mean "that the data packet is at the transmit side of a buffer and is being made ready for sending to its next destination." (D.I. 547 at 20). In other words, Newbridge's proposed construction would limit this phrase to "output dropping" which is dropping performed on the output side of the buffer. After reviewing the claim language and the specification, the Court concludes that Newbridge's construction would exclude the preferred embodiment, because the preferred embodiment drops packets before they are placed in a buffer. The Court's construction of this phrase is supported by the specification, which explains: [T]he packet proceeds through the access node 20 of FIG. 1 to an output controller before being put into an output buffer associated with the output link, through which the packet is to be transmitted. At that time, the information in the packet header field, reserved for the marking signal, is forwarded to a packet dropping logic circuit 53..." ('811 Patent, col. 8, ) (emphasis added). - "determining whether or not the data packet is marked as being transmitted at an excessive rate" is construed to mean determining whether the packet is marked in a network environment where marking is being performed to designate those packets that are transmitted at excessive rates. According to Newbridge, this phrase should be construed to require the claimed dropping method to be able to conclude from the marking information why the packet was marked. After reviewing the specification of the '811 Patent, the Court concludes that Newbridge's construction would exclude the preferred embodiment, which merely checks to see if the packet is marked without engaging in additional processes to determine the reason for the marking. The Court's construction is also supported by the specification which explains that marking can occur as a result of a special service where all of a customer's packets are marked. These special service packets are treated like other marked packets, which indicates that the dropping function described in the specification does not determine the reason for marking. ('811 Patent, col. 10, ). Accordingly, the

9 Court's construction of this phrase embraces the Patent's preferred embodiment and is consistent with the specification. - "evaluating congestion at the switch node" is construed to mean evaluating congestion anywhere within the switch node. According to Newbridge, a construction of this phrase "requires a determination of the congestion at the point in the switch node at which the dropping decision will be made on a data packet which has been prepared for transmission from the switch node." (D.I. 547 at 25). After reviewing the claim language and the specification, the Court concludes that the phrase is not limited in the manner in which Newbridge suggests. The phrase "at the switch node" indicates that this evaluation takes place at the switch node, but does not require that the evaluation be at a specific point at the switch node. Moreover, the specification suggests that there are nodes with multiple queuing points such that independent congestion evaluations at multiple buffers within the node are not excluded. ('811 Patent, col. 1, ). Accordingly, the Court declines to limit the phrase in the manner suggested by Newbridge. 2. Claim 12 of the '811 Patent Claim 12 of the '811 Patent is also directed to a method for dropping a data packet in a node of a packetswitching network; however, Claim 12 also includes steps directed to the marking of the packets. In full, with the disputed terms highlighted, Claim 12 of the '811 Patents provides: A method for dropping a data packet to be transmitted from a switch node in a packet switching network, the method comprising the steps of: a. segregating data packets transmitted by one customer into the network; b. marking that one customer's data packets as being transmitted into the network at an excessive rate; c. preparing to transmit one of that customer's data packets; d. determining whether or not the one data packet is marked; e. evaluating congestion at an output of the switch node; f. determining whether or not congestion at the switch node is at or above a predetermined value; and g. if the one data packet is marked as being transmitted at an excessive rate and the congestion at the switch node is at or above the predetermined value, dropping the packet. ('811 Patent, col. 14, ). For the reasons that follow, the Court construes the disputed terms as follows: [5] - "marking that one customer's data packets as being transmitted into the network at an excessive rate" is construed to mean monitoring the transmission of a customer's data packets and marking those packets that are being transmitted at an excessive rate. Newbridge contends that this phrase should be construed to require the switching node to mark "all packets received by the switching node as if they were being transmitted at an excessive rate." (D.I. 547 at 30). In other words, "the marking is done regardless of

10 whether the received packet is actually being transmitted at an excessive rate." (D.I. 547 at 30). After reviewing the express language of the claim and the specification, the Court disagrees with Newbridge's proposed construction. Newbridge's construction corresponds to the "special service" marking described in the specification of the '811 Patent, in which all of a customer's packets are marked prior to transmission. However, this section of the specification does not refer to marking packets transmitted at an excessive rate, a requirement expressed in the plain language of the claim. In addition, the Court's construction is supported by the specification which discloses a congestion control scheme "directed toward monitoring and marking selected customer data packets and eliminating or dropping from further transmission through the network marked data packets whenever and wherever they encounter a congestion condition". ('811 Patent, col. 5, ) (emphasis added). Further, the specification explains that the packets are selected for marking by "monitoring the bandwidth of a customer and... marking that customer'spackets when the customer's subscribed bandwidth is exceeded." ('811 Patent, col. 5, ). This "monitoring is accomplished by an algorithm which determines whether or not the individual customer... is transmitting at an excessive rate." ('811 Patent, col. 6, ) (emphasis added). Accordingly, the Court's construction is consistent with the plain language of Claim 12 and the '811 Patent's specification. - "preparing to transmit one of that customer's data packets" is construed to mean accessing the header of a packet to make a decision on where to send the packet and to obtain the marking field. The Court's rationale for the construction of this phrase is the same as that set forth in the context of the similar phrase in Claim 10 of the Eckberg '811 Patent. - "evaluating congestion at an output of the switch node" is construed to mean evaluating congestion anywhere within the output of the switch node. The Court's rationale for the construction of this phrase is the same as that set forth in the context of the similar phrase in Claim 10 of the Eckberg '811 Patent. C. Cheng ' Claim 8 of the '174 patent In full, with the disputed terms highlighted, Claim 8 of the '174 Patent provides: Apparatus for receiving input digital data coded using an error correction code, said apparatus comprising error correcting circuit (ECC) means for detecting one or more errors and for correcting a single-bit error in the received data using said error correction code, error detecting circuit (EDC) means for detecting one or more errors in the received data using said error correction code, means for deriving an error signal in a predetermined manner from said received data, and switch means responsive to the absence of an error signal received from said deriving means for switching the detecting of said received data from said EDC means to said ECC means and responsive to the presence of said error signal for switching the detecting of said received data from said ECC means to said EDC means. ('174 Patent, col. 12, ). For the following reasons, the Court construed the disputed terms as follows.

11 [6] - "error correcting circuit (ECC) means for detecting one or more errors and for correcting a single-bit error in the received data using said error correction code" is a means plus function element. The function of this element is to detect one or more errors and correct a single-bit error using the correction code. The structure associated with this element is a syndrome circuit 700, remainder list and comparison circuit 803, and received word store and correct circuit 805 of Figure 8. For the most part, the parties agree with the function of this element as stated by the Court FN4; however, the parties disagree with the corresponding structures identified by the Court. Specifically, Newbridge contends that the only possible corresponding structure to this claim language is element 107 of Figure 1 of the Cheng '174 Patent. After reviewing the specification of the Cheng Patent, the Court concludes that Figure 1 is a functional diagram of the invention which does not show a specific embodiment of the invention. ('174 Patent, col. 2, ; col. 3, ). In contrast, the specification explains that the specific embodiment is depicted in Figure 8. ('174 Patent, col. 7, ). Explaining Figure 8 in more detail, the specification indicates that the specific structures associated with the decoder that performs the function contemplated by this element is the syndrome circuit 700, remainder list and comparison circuit 803 and received word store and correct circuit 805. ('174 Patent, col. 7, , 21-24). Accordingly, the Court's claim construction is consistent with the specification and the specific embodiment of the invention. FN4. Newbridge's proposed function for this element is "[t]o detect one or more errors and to correct single bit errors." The Court's construction, though similar is more accurate, because it takes into account the complete language of the element. Specifically, the Court's claim construction acknowledges that the correcting is done using the "error correction code" as expressly stated in the claim language. - "error detecting circuit (EDC) means for detecting one or more errors in the received data using said error correction code" is a means-plus-function element. The function of this element is to detect one or more errors using the same error correction code used by the ECC. The structure associated with this element is the same syndrome circuit used by the ECC. As with the previous element, the parties' dispute centers on the structures associated with this element. Again, Newbridge advances an element of Figure 1 of the Cheng Patent, specifically element 108 of Figure 1, as the corresponding structure. For the reasons discussed in the context of the previous element, the Court disagrees with the reference to Figure 1. The specification again indicates that the specific embodiment associated with this element is shown in Figure 8. Further, the specification expressly states that "the EDC (108 of FIG. 1) includes the syndrome circuit 700," i.e. the same syndrome circuit associated with the ECC means. Because the specification actually states the structures comprising the illustrative depiction of element 108 in Figure 1, the Court declines to accept what is essentially a more general reference to Figure 1. - "means for deriving an error signal" is a means-plus-function element. The function of this element is to derive an error signal. The structure associated with this element is the syndrome circuit. The Court's ruling concerning the function of this element is consistent with the plain language of the element and thus, needs no further explanation. With regard to the structure associated with this element, the parties' dispute is essentially similar to the dispute regarding the structures of the previous elements. Newbridge contends that the syndrome circuit used in the ECC and EDC circuits shown in Figure 1 is the correct structure. Lucent contends that the corresponding element is not multiple syndrome circuits, but only one syndrome circuit, because the same syndrome circuit is used for both the ECC and EDC means. For the reasons discussed previously, the Court disagrees that Figure 1 is the appropriate depiction of the structure associated with this element. Further, as discussed previously, the Court has concluded that the same syndrome circuit is used for the ECC and EDC means. Accordingly, the Court rejects a proposed structure that would refer to

12 multiple syndrome circuits. - "switch means responsive to the absence of an error signal received from said deriving means for switching the detecting of said received data from said EDC means to said ECC means" is a meansplus-function element. The function of this element is to switch to and from the detecting of errors in the ECC means and the detecting of errors in the EDC means. The structure associated with this element is control unit 810 of Figure 8. Newbridge contends that the function associated with this element is "[t]o control the routing of data to the inputs of the ECC and EDC circuits." (D.I. 569 at 20). After reviewing the claim language and the specification, the Court concludes first, that Claim 8 expressly states that the "switch means" is "for switching the detecting of said received data," not the data itself. Further, the language of Claim 13 expressly provides for "gating" or routing to different means. Claim 8 does not contain such similar language and to read Claim 8 to include such language would undermine that which is claimed in Claim 13. In addition to the claim language, the Court notes that its construction is supported by the specification. ('174 Patent, col. 7, ). Indeed, Newbridge's proposed function for this element rests on the presumption that the EDC and ECC circuits are separate such that routing to and from the EDC and ECC means is required. However, as discussed in the context of the Court's claim construction for the EDC and ECC means, the syndrome circuit 700 is part of both the ECC and EDC means, and therefore, such routing is not required. As for the structure associated with this function, Newbridge again directs the Court to an element depicted in Figure 1, specifically, switch 110. For the reasons discussed previously, the Court does not accept a reference to Figure 1 as providing an accurate description of the corresponding structures. Rather, the Court is persuaded by the fact that the specification specifically states that "[t]he control block and switch functionally shown as 109 and 110, respectively, in FIG. 1 are embodied in control unit 810 in FIG. 8." ('174 Patent, col. 7, ). In the Court's view, its identification of control unit 810 as the corresponding structure is consistent with the specific embodiment of the '174 Patent. 2. Claim 9 and Claim 16 of the '174 patent [7] Because Claim 9 and 16 of the Cheng '174 Patent are dependent on Claim 8, the Court concludes that they should be read in a manner consistent with Claim 8. Accordingly, the rationale and constructions set forth with respect to Claim 8 apply equally with respect to Claim 9 and Claim 16 of the '174 Patent. D. Petr ' Claim 1 of the '087 Patent Claim 1 of the '087 Patent is directed to an ADPCM encoder. In full, with the disputed terms highlighted, Claim 1 of the '087 Patent reads: A coder (100) for converting a linear input signal representative of encoded speech, voiceband data or tone signals into a quantized differential PCM output signal, the input signal being coupled to the input of a difference circuit (11) along with a signal estimate of said input signal to obtain a difference signal indicative of the difference therebetween, a predictor means (12) for producing said signal estimate, an adaptive quantizing means (DLQ) for receiving said difference signal and providing at its output a quantized version of the difference signal, and means (17) for adding said quantized version of the difference signal with said signal estimate and coupling the sum to the input of said predictor means,

13 said adaptive quantizing means being characterized by, means (FIG.2) for dynamically controlling said adaptive quantizing means speed of adaption including, means for producing a fast speed of adaptation when the input signal represents speech signals and a slow speed of adaptation when the input signal represents encoded voiceband data or tone signals. ('087 Patent, col. 8, col. 9, 1. 3). The Court construes, for the reasons stated, the disputed terms as follows: [8] - "predictor means" is a means-plus-function element. The function of this element is to produce a signal estimate of an input signal to obtain a signal indicative of the difference between a linear input signal and a quantized differential PCM output signal. The structure associated with this function is a four-pole adaptive predictor as well as alternative predictor structures incorporated by reference into the Patent. Lucent contends that the function of this element is to provide an estimate of the current signal value based on past values. After reviewing the claim language, the Court concludes that its construction is more appropriate, because it is derived from the express language of the claim, which defines "said signal estimate." As for the corresponding structure, Newbridge directs the Court to Figure 4. The specification, however, indicates that Newbridge is only partially correct. According to the express language of the specification, the corresponding structure consists of an example four-pole adaptive predictor as well as alternative predictor structures disclosed in the Gibison article incorporated by reference into the Patent. ('087 Patent, col. 6, 1.9- col.7, 1.17). Accordingly, the Court is persuaded that its claim construction is consistent with the specification. - "adaptive quantizing means" is a means-plus-function element. The function of this element is to receive the difference signal and output a quantized version of said difference signal. The structure associated with this function is depicted in Figure 1 of the patent and consists of the quantizer, inverse quantizer, and Q adaptation circuit. In construing this term, the Court has concluded that the adaptive quantizing means is not limited to the 4-bit system described in the Patent. The parties essentially agree on the function of this element as construed by the Court; however, the parties disagree as to the structure associated with this function. Specifically, Newbridge contends that the adaptive quantizing means is limited to the 4-bit system described in the preferred embodiment. However, the specification expressly states that "the invention is in no way limited to any particular non-uniform quantizer; in fact, some applications could call for a uniform quantizer." ('087 Patent, col. 8, ). Further, the specification describes a 4-bit system as an example, but expressly foresees other possible values. ('087 Patent, col. 2, ). Given the express language of the specification, the Court declines to limit the invention to the preferred embodiment. - The paragraph beginning... "means (FIG.2) for dynamically controlling" is a means-plus-function element. The function of this element is to control the adaptation of the quantizer such that there is a fast speed of adaptation where the input signal represents speech signals and a slow speed of adaptation when the input signal represents encoded voiceband data or tone signals. The structure associated with this function is depicted in Figures 2, 3, and 5 and described in the specification at Column 4, line 20 to Column 6, line 8. Newbridge contends that the function of this element is "[d]ynamically controlling DLQ's speed of quantizing." However, the Court is persuaded that its construction is more complete in that it takes into account the full language of the claim, thereby explaining what the "dynamically controlling" phrase actually means. In addition, the Court's description of the function of this element is consistentwith the

14 specification. ('087 Patent, col. 5, ). As for the structure corresponding to this function, the parties agree that Figure 2 is involved; however, Lucent also contends that Figures 3 and 5 are involved, as described in col. 4, col. 6, 1.8. After reviewing the specification, the Court agrees with Lucent, because its proposal more fully considers the details set forth in the specification. 2. Claim 8 of the '087 Patent Claim 8 of the '087 Patent is directed to an ADPCM decoder. In full, with the disputed language highlighted, Claim 8 provides: A decoder (101) for converting a quantized n-bit differential PCM input signal (I') representative of encoded speech, voiceband data or tone signals into a linear output signal (r') comprising inverse adaptive quantizer means (115) for receiving said input signal and providing at its output a quantized version of the original difference signal that was encoded into said n-bit differential PCM signal, said decoder being characterized by, means (116) coupled to the input and to the output of said inverse adaptive quantizer means for dynamically controlling the adaptive inverse quantizer means to achieve a fast speed of adaptation when the differential PCM input signal represents speech signals and a slow speed of adaptation when the differential PCM input signal represents voiceband data or tone signals. ('087 Patent, col. 9, ). For the reasons that follow, the Court construes the disputed terms as follows. - "means (116) coupled to the input and to the output of said inverse adaptive quantizer means and for dynamically controlling the adaptive inverse quantizer means" should be construed consistently with the similar language found in Claim 1 of the Patent. Accordingly, the Court's rationale discussed in the context of Claim 1 applies equally with respect to Claim 8 of the '087 Patent. E. Arpin ' Claim 1 of the '136 patent Claim 1 of the Arpin '136 Patent is directed to an apparatus for configuring port circuits in a communication system. In full, with the disputed terms highlighted, Claim 1 provides: A communication system comprising a controller connected to one or more port circuits for providing communications between trunks and lines connected to said one or more port circuits, said system further comprising: feature defining means at each of said port circuits for storing operating parameters defining a plurality of features which can be performed thereat, and reporting means at each of said port circuits responsive to a predetermined status condition thereat for reporting its identification type code to said controller and said controller including

15 memory means for storing predetermined operating parameters defining one of said plurality of features to be performed at each type of said port circuits connected to said system and means connected to said memory means and responsive to the receipt of said type code from each reporting port circuit for accessing said memory means using said type code and for sending predetermined operating parameters to said each reporting port circuit thereby defining one of said plurality of features to be performed thereat. ('136 Patent, col. 10, ). For the reasons discussed, the Court construes the disputed terms as follows. [9] - "communication system" is construed to mean a system for communicating information. The Court's construction of this phrase is consistent with its plain meaning. Accordingly, further explanation for the Court's construction is not required. - "connected" is construed to mean to join. Newbridge proposes a construction of the term "connected" which limits the term to mean "electrically connected," i.e. "jointed together in a manner that allows electrical signals to flow between the components." (D.I. 547 at 48). After reviewing the specification, the Court concludes that the specification refers to both electrical and physical connections, and therefore, the Court declines to limit the term "connect" to a definition with only electrical implications. ('136 Patent, FIG. 1), col. 10, (describing connection of physical cables, trunks and lines); col. 10, (describing "electrical connection" between controller and port circuits). Accordingly, the Court concludes that the construction of the term "connected" should be given its ordinary, plain meaning. - "feature defining means at each of said port circuits for storing operating parameters defining a plurality of features which can be performed thereat" is a means-plus-function element. The function of this element is to store operating parameters defining a plurality of features which can be performed thereat. The structure associated with this function is a memory, such as Random Access Memory (RAM). The phrase "at each of said port circuits" does not require that each port circuit have its own separate feature defining means. The term "features" refers to user-selectable functions. The parties agree to the function of this element as construed by the Court. (D.I. 568 at 42). However, the parties' disagree as to the structure corresponding to this function. Newbridge contends that no structure is clearly identified in the Patent, rendering the claim indefinite. On the other hand, Lucent contends that the structure is "memory, such as random access memory (RAM)." (D.I. 568 at 42). After reviewing the Patent's specification, the Court agrees with Lucent. Indeed, the specification expressly states that the storage of the operating parameters contemplated by this element is in such memory as RAM memory. ('136 Patent, col. 3, , 6-9). With regard to the phrase "at each of said port circuits," Newbridge contends that this phrase requires each of the port circuits to have its own separate defining means. After reviewing the specification, the Court concludes that this construction is not supported by the Patent. Specifically, the specification and the preferred embodiment of the invention shows and describes port boards having multiple port circuits and a single memory at the port circuits for storing operating parameters. ('136 Patent, col. 3, , 36-38). With regard to the term "features," the Court concludes that this refers to "user-selectable functions." Newbridge contends that this term is not limited to user-selectable functions. After reviewing the specification, the Court concludes that its definition of the term "features" is consistent with the specification